Deadmau5, a Canadian record producer whose real name is Joel Zimmerman, has hit back with a counterclaim in a trademark clash over his cat.
In December last year, Deadmau5 filed a trademark cancellation suit against US cat-themed store Meowingtons at the US Patent and Trademark Office (USPTO).
Deadmau5 adopted a black and white cat in 2010 and, because of the cat’s “incessant meowing”, he named it “Prof Meowingtons, PhD”, or “Meowingtons” for short.
The record producer claimed that a ‘Meowingtons’ mark was confusingly similar, shows a false association and was obtained fraudulently.
Emma Bassiri, the CEO of Meowingtons, had filed the trademark at the USPTO in July 2014, to accompany her online cat-themed business. The mark was granted in March 2015.
Meowingtons clawed back in March this year, naming Deadmau5 in a trademark infringement claim at the US District Court for the Southern District of Florida, Fort Lauderdale Division.
According to the suit, Deamau5 “sought to capitalise on Bassiri’s vision” and did so with a “negative media campaign” intended to disparage Bassiri and the store.
On Friday, May 12, Deadmau5 filed a counterclaim.
Deadmau5 had filed a trademark for the term ‘Prof Meowingtons’ at the USPTO in 2015 covering classes 9, 16, 18 and 21.
He claimed that his ‘Meowingtons’ mark had been developed since 2010 and has been used in commerce in 2011.
Between Deadmau5’s alleged first use and the first use claimed by Meowington’s (April 1, 2014), the record producer headlined a Meowingtons-branded tour, said the suit.
The tour, which played across the US and Canada, released a “Meowington Hax Tour Trax” album and released a “Meowington Hax” video. It added that Deadmau5 had sold ‘Meowingtons’-branded headphones during this period.
According to the claim, use of the rival mark has started to tarnish the reputation and goodwill of Deadmau5’s mark.
“For example, according to the Better Business Bureau, counter-defendants’ business activities under the ‘Meowingtons’ mark are so untrustworthy and the products they offer so inferior that their business was rated ‘F’,” said the claim.
The Better Business Bureau is a non-profit organisation that collects and provides free business reviews on more than four million companies in the US.
Deadmau5 is seeking injunctive relief against Meowingtons, profits, triple damages, cancellation of the infringing website (www.meowingtons.com), and an order cancelling Meowingtons’ trademark.
Michael Santucci, managing partner at Santucci Priore and representative of Meowingtons, said: "We reiterate confidence that Meowingtons will prevail in court."
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